In the world of fashion, new pieces are being created every day. From shoes to culottes, from totes to scarves, the fashion world is a hub of creativity and changing styles, so how on earth do you go about securing protection for these pieces? What happens if the designer you are advising (or the business leads) are not convinced about the importance of IP or simply cannot afford to be concerned about it?

The degree to which IP protection is considered important by a fashion company often depends on a number of factors: how important is the design or item? Does the company take a conservative approach and register all relevant IP? Does the company have the money to register the relevant IP? In many cases, IP protection of any kind will only become important upon discovery of a potentially infringing item. Thinking about whether an item will actually attract any kind of protection often comes quite late on, and it can be difficult having a conversation with a designer which involves them being told that their design cannot actually be protected. It’s an even more difficult conversation to have with your boss.

So assuming no registered protection of any sort for a design or item exists, what options are available upon discovery of a potentially infringing item that the business leads are concerned about?

Unregistered designs

Design rights may seem the most relevant to the fashion industry and they often are. However, it is not advisable to simply assume that they can be relied on as there are a number of hurdles to be jumped before unregistered rights can be considered to subsist.

There are two types of unregistered design rights to consider - UK ("UKUDR") and Community ("CUDR"). While UK and Community registered design rights have a lot in common (and also have a lot in common with CUDR) there is a considerable degree of difference between the scope of protection offered by UKUDR and CUDR.

The main difference between the two is exactly what they protect. UKUDR only protect the original shape or configuration (internal or external) of the whole or part of an article. Therefore, if a designer wishes to protect a two-dimensional graphic print or an image applied to a garment, or the features of a garment, they must rely on CUDR (or copyright, see below). CUDR protects the appearance of the whole or part of a product resulting from features of, in particular, the lines, contours, colours, shape, texture, materials of the product or its ornamentation and so is broader and of more relevance to the fashion industry.

In the Lambretta case[1], the court considered whether UK unregistered design rights could subsist in a particular combination of colours. In this instance, the colour combination at issue was a zip jacket with a blue body, red sleeves and white detailing. The court held that the colour combination was not ‘an aspect of the shape or configuration of an article or part of an article’ and therefore was not protected under UKUDR. Further, the colours were expressly excluded from protection since they were ‘surface decoration’, despite the fact that the colour was dyed through the cloth, rather than being a layer on the jacket’s surface.

There is also a difference in the length of protection they provide. UKUDR provides 10 or 15 years of protection depending on whichever of the following occurs first: 10 years after it was first sold or 15 years after it was created. CUDR on the other hand only provides 3 years of non-extendable protection from the moment the design is first made available to the public within the territory of the European Union, so whilst being more relevant to the fashion industry the term of protection granted is much shorter.

Unlike their registered counterparts, UKUDR and CUDR do not provide a monopoly right, they only protect against direct copying, and so you will need to evidence that you own the unregistered right and that someone has copied your design.

Unregistered trade marks (passing off)

A trade mark registration gives the proprietor the right to take action against identical or similar marks for identical or similar goods/services provided certain requirements are met.

Passing off may used as a cause of action where a trade mark has not been registered but:

  1. a certain word, phrase or shape has acquired a goodwill;
  2. there is evidence that an unauthorised use of the mark amounts to a misrepresentation; and
  3. that misrepresentation is causing, or is likely to cause, damage.

Even though 'goodwill’ and ‘reputation’ are terms that are often used interchangeably on the basis that their origin lies in the same commercial activity, there is an important distinction to be made between them for the purposes of passing off. Whereas ‘goodwill’ is typically defined as the “attractive force that brings in custom”[2] and embodies the commercial connection generated between consumers and goods or services present within the jurisdiction itself, reputation in a mark can subsist even where the goods are not in circulation.

The English Court of Appeal decision in Rihanna[3] has provided some helpful guidance on the scope of passing off. The case focused on pop star Rihanna’s objection to Topshop selling a t-shirt bearing a photo of her taken while she was shooting the video for "We Found Love". Rihanna claimed Topshop’s act amounted to passing off on the basis that Topshop customers would believe the t-shirt was official merchandise. Topshop (who had a licence to use the photo from the photographer) claimed English law did not protect image rights and that customers would not automatically believe the t-shirt was official Rihanna merchandise.

The Court of Appeal found in Rihanna's favour and held that there was passing off. The judge stressed that the judgment did not introduce an image right in the UK and cited the importance of the particular facts of the case, including Rihanna's status as a fashion icon.

Relying on the law of 'passing off' is not without its pitfalls. While damage may be easy to demonstrate by way of e.g. lost sales, the goodwill requirement needed for a successful passing off action inevitably means that protecting a new, unregistered brand name or mark may be impossible since it may not have attracted sufficient goodwill to support an action for passing off. Given the fast pace of the fashion industry and the frequency with which trade marks are created, generating that goodwill before marks are copied can be a difficult task. Proving misrepresentation is also tricky - the passer off must be found to have actually misrepresented. Nevertheless, passing off remains an important cause of action in the world of unregistered rights.

Copyright

As highlighted above, the goodwill requirement for successful passing off actions can be a major stumbling block. For creative industries such as fashion, where designs and products are fast moving and regularly changing, relying on copyright can have certain advantages. Where a copycat product copies the look of a fashion design without using the brand name, or where it is not possible or cost effective to seek or claim design protection, copyright offers an additional avenue of claim.

The issue of copyright and the fashion industry is an interesting one. While trade marks and designs are harmonised across the EU (at least in part) there is little in the way of copyright harmonisation. As such, the degree to which particular jurisdictions are apt to recognise copyright subsisting in fashion articles varies greatly. One of the main reasons for this degree of variation is that some jurisdictions have taken a closed list system approach to protecting copyright, whereas others have adopted an open list system within which any work that is "original", howsoever defined, can be protected.

The UK has a closed list system. A work must fall into one of eight categories set out in the Copyright, Designs and Patents Act 1988 ("CDPA"). Case law dictates that the most appropriate category is works of artistic craftsmanship which requires a work to be both artistic and a work of craftsmanship.

The meaning of "artistic" remains difficult to define; as a general rule it seems the work must be aesthetically appealing to the general population or must have been created as an artistic work. The meaning of "artistic" has been considered in a number of cases. In Hensher v Restawhile[4], the House of Lords unanimously held that a prototype for a distinctive three-piece lounge suite, which was intended for mass production, was not artistic. Since this case, a baby's cape has been held not to be artistic because there was no intention to create an artistic work and a patchwork bedspread was not deemed to be artistic because although the designs were "pleasing to the eye" they were not sufficiently creative. These cases suggest judges are reluctant to concede that works of fashion could be artistic.

Demonstrating "craftsmanship" is easier. Knitting and tapestry-making have been treated as crafts. While works of fashion are likely to be considered works of craftsmanship if they are one-off pieces, the position with respect to mass-produced goods is unclear.

Overall, these cases demonstrate that the threshold for showing that a work is one of artistic craftsmanship is high, meaning that garments are often not protected by copyright in the UK. Other countries, including France and Germany, do not have closed list copyright systems and as a result of works of fashion not being attributed to a specific category of protected works, they enjoy a broader scope of protection. In France, the threshold for originality is a work which "bears the stamp of the author's personality" and in Germany copyright protects "personal intellectual creations".

Unjustified threats

A quick note on unjustified threats as these will be a consideration in the context of enforcement. Applicable to all types of IP right with the exception of copyright, unjustified threats provisions exist to try to prevent spurious infringement claims and stop individuals and/or entities potentially intimidating others by threatening infringement of non-existent rights. In short, they provide the alleged infringer with a potential cause of action against the accuser.

Of course, if IP rights do subsist in an item, the 'threat' will not be unjustified.

Conclusion

The various unregistered IP rights available provide different advantages and challenges when protecting fashion products and brands. While all the rights described above are distinct with different functions and different scopes of protection, they all fall under the umbrella of intellectual property and so do not operate entirely independently from one another. Where one type of right may fail to protect a new fashion creation, other forms of unregistered rights may step in to provide the requisite protection and enable enforcement action to be taken.